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Arguing over stripes: Gucci escalates dispute with Forever 21

04-09-2017

Luxury fashion house Gucci is taking fast-fashion chain Forever 21 to court in the US for allegedly infringing its iconic blue-red-blue and green-red-green stripe motifs. Forever 21 had previously filed a claim questioning the validity of the trademarks protecting those stripes.

This isn’t the first time that Forever 21 has been accused of trademark infringement. Puma, Diane Von Furstenberg and Adidas have all acted against the fast-fashion chain in recent years. It is perhaps for this reason that Gucci was so quick to act when the chain started selling low-cost fashion featuring blue-red-blue and green-red-green stripes. The high-fashion brand Gucci summoned Forever 21 several times in December 2016 requesting that it stopped selling products featuring the stripe motifs. Forever 21 countered, questioning the validity of the trademarks protecting those stripes; in particular, arguing that the trademarks as registered do not meet the requirement of distinctiveness. 

A potential test case for fashion-related trademarks
According to Gucci, the entire Forever 21 business model is "based on undermining intellectual property rights". In a press release it stated:

“Gucci has today taken steps to finally put an end to US mass retailer Forever 21's blatant exploitation of Gucci's famous and iconic blue-red-blue and green-red-green stripe webbing trademarks. In two filings today in the US District Court, Central District of California, Gucci has asked the Court to dismiss the spurious claims that Forever 21 lodged on June 26, 2017, and has brought counterclaims against Forever 21 for wilful trademark infringement, trademark dilution and unfair competition.

“Gucci's renowned blue-red-blue and green-red-green stripe webbing trademarks have been iconic codes of the House of Gucci for more than 50 years, following their introduction in 1951 and 1963 respectively, with the first US trademark registration of the webbing dating back to 1979.

“Despite Forever 21's attempt to use its lawsuit to intimidate Gucci into ceasing its trademark enforcement efforts, Gucci is as committed as ever to protecting its long established IP rights, which are at the heart of the brand's identity, and to ending once and for all Forever 21's reprehensible exploitation of its distinctive trademarks and those of other brands who have suffered the same type of piracy.

“Gucci considers the defense and enforcement of its celebrated trademarks of paramount importance in protecting its customers from those who wish to knowingly profit from deception and confusion."

If it is to succeed, Gucci will need to prove in court that there is a chance that consumers will incorrectly think that the products offered by Forever 21 originate from the Italian fashion house or one of its affiliates, ie: that there exists a likelihood of confusion. Here, the ability to provide proof of distinctiveness acquired through reputation will likely also play an important role.

For specific advice on protecting fashion brands and designs as trademarks, please speak to your Novagraaf attorney or contact us.

Raquel Alvarez is a paralegal at the Amsterdam offices of Novagraaf